In Defense of Software (Patentability)

Posted by Dana Rao, Vice President of Intellectual Property and Litigation (as seen originally on Patent Progress)

A few weeks ago I was asked to speak at my daughter’s 8th grade honors science class, regarding the weighty topics of “patents and innovation.” They are in the middle of a unit on inventions and they have to invent something as part of that class. As I prepared my slides on interesting topics (to me) like “how Morse used the existing ideas of an electromagnet to solve the problems of instantaneous communication as illustrated in the beacon scene of the Lord of the Rings,” the thought occurred to me that the principles from these legendary inventions illustrate why the software patentability debate of today is disconnected with our country’s history of innovation.

Samuel Morse did not discover the abstract idea that running an electric current through a wire wrapped around iron transforms the previously nonmagnetic iron into a very powerful electromagnet. Others had discovered this concept (though it was still a recent discovery in 1852). Morse combined the principle of electromagnetism with his own, intangible, idea, that you can use a code to deliver messages that would reduce the number of wires required to transmit the message, and print the result on paper. Other solutions required many wires, or used moving needles in scopes at the end to reveal the message. Morse’s invention increased the practicality of using electromagnetism to solve the problems of instantaneous communication.

He first had an idea, the use of electromagnetism in a particular way, and then had animplementation, one that fit the medium of his idea, in this case, wires and metal and ink. Samuel Morse’s code was an intangible concept indeed, but was deemed patentable even in 1852, as implemented in his telegraph machine, for telegraphic purposes.

The main thrust of the argument against the patentability of software is that a software program, like an algorithm, describes nothing more than an “abstract idea.” This argument has as its corollary the notion that patentable subject matter only can be found in an invention in something “tangible.” Patents for intangible things (like an algorithm implemented in software) are conflated with patents on purely abstract ideas (like “time travel” or “electromagnetism”), and therefore, neither category should be patentable. In reality, though, all ideas and inventions are at their very core intangible concepts. It is when the inventor actually implements an idea in the medium best suited for its execution that the invention enters the realm of patentable subject matter. Software is no different than any other medium, and inventions made in software are as deserving of patent protection as inventions anywhere else.

Every patent has a similar story as Morse’s. In today’s world, the medium in which many of our inventions manifest themselves is software. These software-implemented inventions typically are executed by a general purpose processor, coupled to a general purpose memory, often coupled to a network. Instead of being implemented in software, these inventions could be constructed using specialized circuitry, or directly in silicon, or by some specific network topology to accomplish their means. However, there would be nothing patentable about those implementation mediums (circuitry, silicon, or network topology) in the fulfillment of the inventions. Nor was there anything patentable about the mediums of Morse’s iron, wire, and ink, or Thomas Edison’s carbon, electricity, and glass. Instead, it was the ideas animating the use of those mediums to solve their problems (the “algorithms” as it were), that made those discoveries patentable.

If all inventions are intangible at their core, when should an idea be considered to be unpatentably abstract? In the seminal case of O’Reilly v. Morse, the Supreme Court found Morse’s eighth patent claim, for the use of electro-magnetism however developed for printing letters at any distances, to be drawn to an abstract idea, and thus unpatentable. Morse, for that one claim, explicitly stated his invention was not bound by the details of his specification. In finding this claim unpatentable, the Court articulated the basis on which to determine whether an abstract idea is patentable subject matter:

Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more.

The Court stated that, to determine whether an idea is abstract, the focus should be on whether the invention is disclosed and claimed fully and exactly. An inventor can secure a patent in any art on any useful result, the Court says, as long as the exact means for accomplishing that result is specified. The nature of the invention is irrelevant.

And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.

The key question to understanding whether an idea is abstract, the Court says, is whether or not the inventor described the process in sufficient detail to allow others to achieve the same ends without infringing the patent if they use substantially different means.

We see so often under current law that the “claims are not bound to the specification.” But why shouldn’t they be? Samuel Morse’s code was found to be patentable because, in his other claims which lacked the explicit disclaimer of linkage to his specification, the Court limited their breadth to his disclosure. This makes sense. There is no sound policy reason to grant monopolies to people for implementations beyond the scope of their invention. Unfortunately, patents today are allowed to have claim scopes defined by their relation to the prior art (or, more accurately, the prior art found at the time of examination), and are not grounded by any of the details in their specification. Breaking the connection between claims and the specification has resulted in the rise of vaguely drafted patents that are the source of the patent troll suits. With no meaningful constraints imposed by the description of the invention itself, the patent trolls are free to make their abstract claims apply to all.

In response, many blame software itself as the cause of these meritless suits, and invoke Section 101 to simplistically assert that software related inventions are just too abstract to be patented. But from both a technical and a legal perspective, this argument of convenience is plainly not correct. Software is merely the medium by which the inventions of today are implemented. If an invention, in software or in any other field, is for a “useful result” and specifies the means described in sufficient detail so full and exact that anyone skilled in the science can produce the same result, the invention should be considered to be more than an abstract idea. If such disclosure is lacking, then the claim is invalid. It is either for an idea that is too abstract, or described too abstractly.

If we bring our Section 112 jurisprudence in line with the doctrine articulated by the Morse Court, I believe we can rid our system of abstractly drafted patents. And stricter application of Section 103 will further curb the grant of software patents whose sole claim to novelty is that they implement ancient concepts in the new medium of software. Both of these measures will appropriately shift the patentability focus from the medium to the method disclosed.

The teenagers in that 8th grade science class told me all sorts of cool ideas (which I can’t disclose), and most typically the medium of their inventions was software. Let’s ensure the patent system continues to protect the inventors of the next generation, in whatever medium they choose to invent.